9313456 et al.

Patent Trials and Appeals Board

Jun 15, 2020

90014031 - (R) (P.T.A.B. Jun. 15, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/014,031 10/11/2017 9313456 32983-00022 1956
33772 7590 06/15/2020
MCDONALD HOPKINS LLC
600 Superior Avenue, East
Suite 2100
CLEVELAND, OH 44114-2653
EXAMINER
KE, PENG
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/15/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NSIXTY LLC
Patent Owner and Appellant
____________

Appeal 2019-003777
Reexamination Control 90/014,031
Patent 9,313,456
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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Reexamination Control 90/014,031
Patent 9,313,456

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Appellant requests rehearing under 37 C.F.R. § 41.52 of the Decision
on Appeal, entered January 10, 2020 (“Decision” or “Dec.”), which affirmed
the Examiner’s final rejection of claims 1–21.
To clarify the record with respect to the rejection of independent
claim 12 under 35 U.S.C. § 103, our Decision has been designated a new
ground pursuant to our authority under 37 C.F.R. § 41.50(b).
Thus, the Request for Rehearing is granted in part.

DISCUSSION
Independent Claim 12
First, with respect to the limitation “mobile device,” Appellant argues
the following:
The Board, however, seems to suggest that the term
“mobile device” must include all possible “input devices” and
“message recording devices.” There is no legal support for this
conclusion and the doctrine of claim differentiation makes the
Board’s construction legally erroneous. . . .
Thus, claim 12 must add a further limitation, which
means that the term “mobile device” necessarily does not
include all “input devices” or “message recording devices.”
(Req. for Reh’g 3.)
To adopt Board’s construction would be the same as
taking the language out of the dependent claims and
shoehorning it into claim 1, which would be legal error.
(Id. at 4.)
However, in an amendment after final, filed September 27, 2018,
Appellant amended dependent claim 12, such that claim 12 was rewritten in
independent form. In an Advisory Action, mailed October 16, 2018, the
Examiner entered Appellant’s amendment to dependent claim 12.
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Moreover, in the “Claims Appendix” of Appellant’s Appeal Brief, claim 12
was rewritten in independent form, with the status “Previously Presented.”
(Br. 26.) Accordingly, the doctrine of claim differentiation in inapplicable.
Thus, our construction of independent claim 12 was based upon Appellant’s
claim amendment, filed September 27, 2018, rather than “taking the
language out of the dependent claims and shoehorning it into claim 1.”
Second, with respect to the limitation “mobile device,” Appellant
argues the following:
The Board . . . applies a circular definition of “mobile device”
as “devices appropriately sized for [a] mobile device.” This
definition reads in a size limitation without ever defining what a
“mobile device” actually is.
(Req. for Reh’g 4.)
However, page 16 of our Decision states the following:
While the ’456 patent provides numerous examples for both
“input device” and “message recording devices,” not all such
devices can be used for a “mobile device,” such as cell phones
or PDAs, due to size limitations. Thus, we interpret “the input
device or the message-recording device comprises a mobile
device” as devices appropriately sized for [a] mobile device, for
example, as smaller-scale keyboard, touch screen monitor,
camera, or video camera.
(Dec. 16 (emphasis added).) Thus, Appellant’s argument that “[t]he Board
. . . applies a circular definition of ‘mobile device’ as “devices appropriately
sized for [a] mobile device” is unsupported by our Decision.
Third, with respect to the limitation “mobile device,” Appellant
argues that “[n]othing in the intrinsic evidence or extrinsic evidence supports
that mobile devices require a size limitation” and “[t]here is no suggestion
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that keyboards or touchscreens are larger or smaller than mobile devices
anywhere in the specification.” (Req. for Reh’g 5.)
However, pages 15–16 of our Decision states the following:
With respect to the claim limitations “input devices,”
“message recording devices,” and “mobile device,” the ’456
patent further describes the following:
. . .
Many cell phones, PDAs [personal digital
assistants], and other electronic devices provide a
convenient and direct way of communicating a photo or
video message to an individual. For example, many cell
phones are equipped with digital cameras for recording
photos or videos. Additionally, many phones allow an
electronic photo or video file to be sent to another cell
phone via a text or an email or uploaded directly to the
Internet.
(Col. 1, ll. 42–48.) While the ’456 patent provides numerous
examples for both “input device” and “message recording
devices,” not all such devices can be used for a “mobile
device,” such as cell phones or PDAs, due to size limitations.
Accordingly, one of ordinary skill in the art would recognize that “cell
phones”1 or “PDAs,”2 as disclosed in column 1, lines 42–43 of the ’456

1 One technical definition of “smart phone” (or “wireless phone”) is “[a]
hybrid between a wireless telephone and a personal digital assistant (PDA)”
which “integrate wireless telephones with many of the personal
organizational functions of PDAs . . . to lightweight palm-style computers.”
MICROSOFT® COMPUTER DICTIONARY 485 (5th ed. 2002).
2 Likewise, one technical definition of “PDA” is “[a] lightweight palmtop
computer designed to provide specific functions like personal organization
(calendar, note taking, database, calculator, and so on) as well as
communications.” Id. at 396.

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patent, are smaller in size than keyboard 22 or display 24, as illustrated in
Figure 2 of the ’456 patent.
Fourth, with respect to the limitation “mobile device,” Appellant
argues that “the Decision ignores the wealth of case law that shows that
persons of ordinary skill would know that the term mobile device has
nothing to do with size, but rather that the device is a telecommunications
device.” (Req. for Reh’g 5.)
However, we construe the limitation “mobile device” in the context of
the entire limitation “wherein at least one of the input device or the message-
recording device comprises a mobile device” (emphasis added), instead of as
an isolated claim term with no relationship with the input device and the
message-recording device.
Last, with respect to the limitation “mobile device,” Appellant argues
that “the Examiner did not allege that Massarsky’s kiosk was a mobile
device because it ‘integrated’ a keyboard into a larger unit,” but “rather,
cited Massarsky’s as a mobile device because it has wheels.” (Req. for
Reh’g 6.)
With respect to the limitation “wherein at least one of the input device
or the message-recording device comprises a mobile device,” the Examiner
provides the following statements:
Massarsky teaches the kiosk includes wheels or castors.
(see Massarsky fig. 3)
(Final Act. 19.)
And Massarsky teaches such mobile device because
Massarsky’s Kiosk can be moved. (see Massarsky fig. 3) It is
clear from the figure [3], Massarsky’s Kiosk is not designed to
be permanently bolted to a specific location.
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(Id. at 31.)
Therefore, one of skill in the art would know by looking
at the figure [3 of Massarsky] such design would provide
mobility for the kiosk.
(Id. at 32.) From the Examiner’s statements, we are unable to determine if
the Examiner’s findings with respect to claim 12 are based upon: (i) the
kiosk being movable because of the wheels, and thus, such kiosk is a
“mobile device”; or (ii) the “input device” and “message-recording device”
(i.e., “mobile devices”) are “integrated” into the “portable kiosk” as a single
larger unit. Thus, because of this ambiguity, we designate our Decision a
new ground of rejection so the Examiner can clarify the record, and to
provide Appellant with the opportunity to respond with claim amendments,
additional arguments, or additional evidence.

Independent Claim 1
First, with respect to the limitation “portable kiosk,” Appellant argues
the following:
[T]he Board made a distinction between kiosks “mounted or
secured to a wall” (non-portable kiosk) and the “stand-alone
kiosks” of Figures 2 and 3 (“portable kiosk”). . . . The Decision,
however, misinterprets column 5, lines 4–13 and Figures 2
and 3 so that the kiosk of claim 3 would be excluded from the
definition of a “portable kiosk.”
(Req. for Reh’g 7.)
Accordingly, the distinction that the Decision makes
between “stand-alone kiosks” as portable and “wall-mounted
kiosks” as not portable is not supported by the specification.
The portable kiosk 12 of Figure 3 is both a wall-mounted and
stand-alone kiosk in different preferred embodiments.
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(Id. at 9.)
However, page 7 of our Decision states the following:
As illustrated in Figures 2 and 3, the height of message-
recording device 20 (e.g., digital video camera) or display 24,
which allows a user to watch a video communication, can be
approximated as the height of the user. Thus, under the
broadest reasonable interpretation consistent with the
Specification, we interpret “portable” as “capable of being
carried or moved about,” which includes stand-alone kiosk 12
(e.g., unsecured to walls), such kiosk 12 having the
approximate height of the user.
(Dec. 7 (emphasis added).) Thus, Appellant’s statement that “the Board
made a distinction between kiosks ‘mounted or secured to a wall’ (non-
portable kiosk) and the ‘stand-alone kiosks’” such that “the kiosk of claim 3
would be excluded from the definition of a ‘portable kiosk’” is unsupported
by our Decision. Our statement that “we interpret ‘portable’ . . . [to]
include[] stand-alone kiosk 12 (e.g., unsecured to walls), such kiosk 12
having the approximate height of the user” does not mean that all other
embodiments from the ’456 patent are excluded.
Second, with respect to the limitation “portable kiosk,” Appellant
argues the following:
Further, the Decision maintains the Examiner’s disregard
of the prosecution history. The Decision alleges that the
Appellant has “not explained how the location of such
photobooth/e-mail center 10 is relevant to portability.” The
Appellant described that “public kiosk” was clearly and
unequivocally disclaimed during examination, which the
Examiner and Board have not addressed.
(Req. for Reh’g 9 (citations omitted).)
However, pages 11–12 of our Decision state the following:
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Last, Appellant argues the following:
The original Examiner understood that the
specification defines the term “portable kiosk” as not a
standard kiosk or a public kiosk, and as kiosk that
requires more than the ability to be moved with a wheel.
We know this because the original Examiner cited U.S.
Pat. Pub. No. 2002/0106620 to Barnum during
prosecution, which identifies wheels 120. The original
USPTO Examiner then allowed the ’456 Patent to issue
because these wheels did not make Barnum’s kiosk a
“portable kiosk,” even though Barnum was movable.
A review of the original prosecution history for Application
No. 14/084,258 indicates that Barnum was cited on form PTO-
892 (“Notice of References Cited”), in which the original
Examiner stated “[t]he prior art made of record and not relied
upon is considered pertinent to applicant’s disclosure.” In other
words, the original Examiner did not provide any reasons for
allowing the original claims over Barnum. Accordingly,
Appellant’s argument that “[t]he original USPTO Examiner
then allowed the ’456 Patent to issue because these wheels did
not make Barnum’s kiosk a ‘portable kiosk,’ even though
Barnum was movable” is unsupported by the prosecution
history.
(Dec. 11–12 (citations omitted).) Thus, Appellant’s argument that
“Appellant described that ‘public kiosk’ was clearly and unequivocally
disclaimed during examination, which the Examiner and Board have not
addressed”3 is unsupported by our Decision.

3 Appellant’s argument that “‘public kiosk’ was clearly and unequivocally
disclaimed during examination” (Req. for Reh’g 9) is an apparent disclaimer
of a preferred embodiment. In particular, the ’456 patent discloses that
“[f]or example, a kiosk 12 located at a baseball park may include a camera
positioned to record a user such that the baseball field or other recognizable
land mark is seen in the background.” (Col. 3, ll. 63–66.) Moreover,
Appellant’s Appeal Brief states that “NSixty’s customers . . . provide these
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Last, with respect to the limitation “associate the captured media data
with the identification information associated with the user,” Appellant
argues the following:
The Decision alleges that the Examiner cited Belz for the
claim term “associate the captured media data with the
identification information associated with the user.” . . . . The
flaw here is that the Examiner first applied Belz in its Answer.
This means that the Appellant could not rebut the Examiner’s
new assertion with any evidence or argument.
(Req. for Reh’g 10.)
In the Final Action, mailed June 27, 2018, for the limitation “an input
device integrated within the portable kiosk configured to receive
identification information associated with a user,” the Examiner stated that
“Belz teaches having a username and password for data upload” and cited
“Belz col. 2, lines l–12.” (Final Act. 15–16.) Accordingly, Appellant’s
argument that “the Examiner first applied Belz in its Answer,” is
unsupported by the Final Action.

Dependent Claim 17
With respect to the limitation “social network,” Appellant argues the
following:

portable kiosks to patrons at entertainment venues, sporting events, tourist
attractions, and trade shows” and “[u]sers of the claimed portable kiosks
have found them so innovative that national brands, such as Major League
Baseball (MLB), the National Basketball Association (NBA), the National
Association for Stock Car Auto Racing (NASCAR), NCAA Collegiate
Athletic organizations, and the National Football League (NFL) Super bowl
Village have all leased or bought NSixty portable kiosks.” (Br. 4.)
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[T]he Examiner did not allege that Belz discloses a social
network during reexamination. The Examiner’s citation to Belz
in the Answer, thus, is an unsupported conclusion. Absent a
rejection based on Belz, there was no way for the Appellant to
rebut application findings cannot be sustained.
(Req. for Reh’g 12 (citations omitted).)
However, the Examiner’s Answer states the following:
Merriam Webster defines “Social Network” as “an online
service or site through which people create and maintain
interpersonal relationship.” Woodworth and Belz teach such
online service because they allow users to share media and
digital information to maintain their interpersonal relationship.
(see Woodworth col. 8, lines 3–30, col. 10, lines 5–12; Belz
col. 2, lines 1–12).
(Ans. 7–8 (footnote omitted).) Accordingly, Appellant’s argument that “the
Examiner did not allege that Belz discloses a social network during
reexamination” is unsupported by the Examiner’s Answer.

CONCLUSIONS
The Request for Rehearing has been considered. As discussed
previously, we grant the Request for Rehearing to designate our Decision a
new ground of rejection pursuant to our authority under 37 C.F.R.
§ 41.50(b). The Request for Rehearing is otherwise denied. Accordingly,
the Request for Rehearing is granted in part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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Outcome of Decision on Rehearing:
Claims 35 U.S.C § Basis Denied Granted
1–16, 18–21 103 Hoyt, Belz,
Massarsky
1–16, 18–21
17 103 Hoyt, Belz,
Massarsky,
Davis
17
Overall
Outcome
1–21

Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C.
§
Basis Affirmed Reversed
1–16, 18–21 103 Hoyt, Belz,
Massarsky
1–16, 18–21
17 103 Hoyt, Belz,
Massarsky,
Davis
17
Overall
Outcome
1–21

REHEARING GRANTED IN PART
37 C.F.R. § 41.50(b)

tkl
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PATENT OWNER:
MCDONALD HOPKINS LLC
600 Superior Avenue, East
Suite 2100
Cleveland, OH 44114-2653

THIRD PARTY REQUESTER:

WEIDE & MILLER, LTD. (GENERAL)
10655 Park Run Drive, Suite 100
Las Vegas, NV 89144